Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Birgit Clark, Merpel, Jeremy Phillips, Eleonora Rosati, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

"If a patentee utterly prevails on infringement and validity and is held entitled to financial compensation in the Courts of England and Wales right up to the point where no further appeal lies, can all that be set at nought and utterly unravelled if the patent is later held invalid in the European Patent Office?"

In two senses the court's ruling is academic. First, after their Lord/Ladyships wrote their judgments but before they delivered them, the parties agreed to the preparation of a consent order. Secondly, the opposition proceedings that may result in the claimant's patents being declared invalid have not yet been concluded. Without going into the factual details of this dispute or the close legal reasoning arising from them (topics that other members of the IPKat team may choose to address later), this team member just wants to highlight a couple of the observations made by Jacob LJ, who gave the main judgment with which his colleagues concurred.

It is meaningless to decide the question on the basis of whether the national court or the EPO is "top dog". As Jacob LJ says (at para.26):

"Nor does it help to ask whether a national court or the EPO is "top". It all depends on the circumstances, as the two following scenarios illustrate:

(i) The patent is still under opposition when a national court holds it valid and the EPO then revokes. So the EPO is "top";

(ii) The EPO holds the patent valid and a national court subsequently revokes it (there is no estoppel created by an EPO decision as to validity, see Buehler v Chronos [1998] RPC 703). So the national court is "top."

In truth asking which tribunal is "top" is simply not helpful – there is just the untidy compromise inherent in the EPC and one which cannot be properly resolved unless and until a rational patent litigation system for Europe is created".

It is sensible to make a party pay damages for infringement even where the infringed patent is later held invalid. At paras 44 to 46 Jacob LJ says:

"Now a purist may say: it is a nonsense, and moreover an unjust nonsense, for a man to have to pay for doing what, with hindsight, we know to have been lawful. The purist might, I suppose, also say that a licensee who has paid royalties under a patent subsequently revoked ex tunc should get his money back. He might even say that a man who lost profits by refraining from some commercial activity by reason of a fear, now known to be groundless, of infringing the patent should have some remedy.

But I think there are good and pragmatic reasons why the purist approach makes bad business sense. You cannot unravel everything without creating uncertainty. And where a final decision has been made on a fair contest between the parties, that should stand as the final answer between them.

In a sense a patent is always potentially at risk – someone may come up with a bang-on but obscure piece of prior art (my favourite pretend example is an anticipation written in Sanskrit wrongly placed in the children's section of Alice Springs public library), or simply with better evidence on known prior art. That is no reason for undoing what has been done or regarding a final decision as merely provisional. After a final decision businessmen should be able to get on with their businesses, knowing what the position is".

This is very much a lawyer's analysis and the IPKat has some doubt as to whether a competition-minded economist [for it is they who rule the roost ...] would take the same view. Also, the Kat keeps re-reading Article 1 of Protocol 1 of the European Convention on Human Rights, which states:

"Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law.

The preceding provisions shall not, however, in any way impair the right of a State to enforce such laws as it deems necessary to control the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties".

He is not a human rights lawyer and does not pretend to be, but he can't help speculating whether one's money is a protected possession, in the context of him being deprived of it for the sake of being made to pay damages to compensate a patent owner for infringing a right that should never have been granted in the first place.

Right: a litigant waves bye-bye to damages and costs -- he'll never see them again, even if patent he is held to infringe turns out to have been invalid all along.

6 comments:

I note that, in paragraph 58 of the judgment, Jacob LJ refers to "s.74A" of the Patents Act. This section relates to Patent Office [sic] Opinions. What he meant, of course, was s77(4A), which relates to revocation of a EP(UK) patent.

Also, the EPO Board of Appeal case referred to in paragraph 31 should be T 39/03, not T 39/05 as stated.

In the words of Lloyd LJ in the recent DaVinci code case,

"It might have been preferable for him to have allowed himself more time for the preparation, checking and revision of the judgment".

Even more importantly, if the Enlarged Board do decide that the divisional application from which the action derives was void ab initio due to containing subject matter not present in the parent application as-filed, contrary to Article 76 EPC, would section 76 of the UK Act need to be revised back to what it was before 1988 in order to comply with the EPC?

Interesting manouevres in the EPO case, if you take a look at Register Plus. The proprietors, Unilin, have withdrawn their appeal.

The Register Plus images database is down as I write. So the following is based on memory from a quick glance earlier today, and I can't double-check it at the moment.

The appeal of one of the opponents was withdrawn last week. I think it might have been that of Berry Finance (the parent company of Berry Floor). Presumably part of their settlement with Unilin?

Unilin's withdrawal is then conditional on their understanding that the proceedings will now halt because no other appeal is still outstanding, and that their patent will be maintained in the amended form allowed by the Opposition Division.

This would presumably mean that their patent survives the attack based on subject matter having been added in the divisional. The amendment allowed by the opposition division overcame this. The question referred to the Enlarged Board in G3/06 was whether that amendment should have been allowed.

It will be interesting if the Enlarged Board decides the other way in the consolidated referral G1/05. The only real difference between the two cases is that G1/05 is about whether such amendments are allowable before grant, while in Unilin's G3/06 it was after grant.

I also wonder if Unilin's conditional withdrawal will be effective. I think there are still a couple of interventions pending under Article 105 EPC, including one filed only very recently. But again, I've not checked those interventions, nor have I looked up the law on what would happen to them.

She concedes that, of course and as usual, Jacob LJ and his mates got it 'spot on fair dinkum', in their most recent pronouncement on the lamentable dog's breakfast that passes for a European Patent System, nevertheless the repeated joke about her chlidren's section must cease forthwith.

Despite Jacob LJ saying that it is a 'pretend' example, she observes that hordes of gullible, pommie patent attorneys have descended on her library in search of "prior art". Being an unsophisticated sort, she has directed those hordes to her comprehensive collection of "pre-school art", potato paintings, hand drawings and so forth. They have not been best pleased.

Anyway, unless a full apology is forthcoming, regrettably she will be forced to take the matter further.

The IPKat's sidebar contents

Want to complain?If you feel that you have been unfairly prevented from posting a comment on one of this weblog's features, here's what you can do about it

The IPKat's cousins: some IP-friendly blogs for youThe IPKat lists his 'family' of IP blogs, some of which focus on specific rights, geographical zones, markets or interests

How many page-views?See how many times the pages of the IPKat weblog have been purr-viewed

The Kat that tweetsToo short to blog? Some news and views are still worth airing, thanks to Twitter

Want to receive the IPKat weblog by email?You can get each post, or a digest, sent direct to your favourite mailbox

Not just any old IPKatEvery so often, this feline creeps into the limelight

The IPKat's RSS feeding arrangementsFeedburner and all those other things ...

What you've been sayingHere are the most recent readers' comments on the IPKat's posts

The IPKat's Greatest Hits!Here are the five posts on the IPKat's weblog that have received the most attention from readers over the past 30 days

Has the Kat got your tongue?Some translation facilities for readers whose first language is not English, or who are just plain masochistic

Creative Commons licenceYou too can make use of this blog's contents, if you follow the rules

The IPKat ArchiveAncient posts, going back to June 2003

Want to complain?

If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation -- essentially that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should be relevant to the blogpost on which they purport to comment.

If you feel that your comment should have been moderated, please email the IPKat at theipkat@gmail.com and let him know, since it may be that your comment has been misdirected into the Blogger software's Spam file.

In the event that there has been no software malfunction and that your post has been rejected, if you want to appeal against this decision please contact either (i) Dr Danny Friedmann of theIP Dragonweblog (ipdragon@gmail.com) or (ii) Professor Dennis Crouch of the Patently-O weblog (dcrouch@patentlyo.com). Danny or Dennis will review your complaint, preserving the confidentiality of your identity and will let both you and us know whether your complaint is justified.

If your complaint relates to bias or distortion, the IPKat suggests that you contact him initially, bearing in mind that he and Merpel are generally willing to host pieces by guest contributors even when their opinions are at odds with those of this blog's contributors.